All questions

Civil litigation

i Forums

In Cyprus, trademark disputes are mainly dealt with by the Registrar of the Intellectual Property Section.

In addition, parties can pursue legal recourse at the district courts, including civil and criminal proceedings, as well as at the Administrative Courts. No intellectual property litigation specialist court exists in Cyprus.

ii Pre-action conduct

The courts encourage settlement at all stages of the proceedings. Although the court cannot compel parties do so, it encourages parties to engage in alternate dispute resolution or mediation.

iii Causes of actionTrademark infringement

Trademark infringement is constituted in the following situations:

  1. when the sign used is identical to a trademark and is used in relation to goods or services identical to those for which the trademark is registered (double identity);
  2. when the sign used is either identical or similar to the trademark, and used in relation to goods or services that are identical or similar to those for which the trademark is registered, provided there exists a likelihood of confusion on the part of the public, which includes a likelihood of association (likelihood of confusion); and
  3. when a sign that is either identical or similar to a trademark is used, irrespective of whether it is used for goods or services that are identical or similar to those for which the trademark was registered, has a reputation in Cyprus, and the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark (reputation).
Passing off

The tort of passing off is codified in the Civil Wrongs Law.11 Section 35 states that 'any person who by imitating the name, description sign, label or otherwise causes or attempts to cause any goods to be mistaken for the goods of another person, so as to be likely to mislead an ordinary purchaser to believe that he is purchasing the goods of another person, shall commit a civil wrong against such other person'.

For the plaintiff to succeed in a passing off action he or she must prove:

  1. a false representation;
  2. made by the defendant in any business dealings;
  3. to future clients or to those where the goods or services are going to end up;
  4. which has as its purpose interference with the business of the plaintiff; and
  5. which results or may result in real damage to the business or goodwill of the plaintiff.
iv Conduct of proceedings Pleadings and time frames

First, the plaintiff has the opportunity to either file a generally endorsed writ of summons or a specially endorsed writ of summons, which will include his or her statement of claim. The defendant then has the opportunity within 14 days to file his or her defence and counterclaim (if any), and the plaintiff will then have another seven days to submit his or her reply along with an application requesting the court to set a date on which both parties will appear before the court for directions. On that date, the attorneys will discuss the case with the judge. If there is no possibility for an out-of-court settlement, the court will set a date for the parties to perform discovery of documents and inspection, and reveal their witnesses along with a brief description of their testimony.

Trial and hearing

The pre-hearing stages usually take 24 to 36 months to be concluded. The court then sets a hearing date. The hearing of the court action usually takes place within four to five years from filing.

Evidence

Evidence is usually delivered in the form of witness statements and usually follows the directions stage as described above.

Section 77 of the Trademarks Law states that in cases where a party presents reasonably available evidence that adequately support his or her allegations of real or purported trademark infringement, and at the same time alleges that the opposing party holds evidence, that party may apply to the court and the court may order the opposing party to provide this evidence, subject to conditions imposed by the court to safeguard the confidentiality of the said information. In addition, it is noted that in cases where an infringement on a commercial scale is alleged, the court may, following an application filed by a party, order the disclosure of banking, financial or commercial documents that are under the control of the opposing party, subject to conditions imposed by the court to safeguard confidentiality and to ensure the disclosed documents are merely used for the purposes identified in the court order.

Section 78 of the Trademarks Law states that, in cases where an infringement on a commercial scale is alleged, the court may, following an application filed by a party, order the provision of information regarding the origin and distribution networks of the goods or services infringing the trademark, by the suspect and any other person who:

  1. is found to possess the illegal goods on a commercial scale;
  2. is found to use the illegal services on a commercial scale;
  3. has ascertained as the person who provides services on a commercial scale used to infringe the trademarks; or
  4. has been identified by any of the persons referred to in (a), (b) or (c) above as being involved in the production, manufacturing or distribution of the goods or in the provision of the services.

Said information should include:

  1. the full names and addresses of the producers, manufacturers, distributors, suppliers or other previous possessors of such good or service as well as the recipients, wholesale and retail sellers; and
  2. information on the amounts produced, manufactured, delivered, received or ordered as well as the consideration collected for said goods or services.Costs

    The payment of costs depends on the discretion of the court. Most of the time, the court will order the losing party to pay all of the successful party's costs unless a good reason exists not to. Furthermore, in most cases, the court orders these costs to be calculated by the court's registrar. The proportion of the costs usually recovered amounts to around 70 to 80 per cent.

    v Remedies

    The following remedies are available:

  3. A court injunction restraining the use of the trademark by the defendant along with publication of its decision or the performance of any other measure that will result in the dissemination of the relevant information from its decision. In the event of non-compliance with its decision, the court may impose either a penalty fee or a term of imprisonment.
  4. A court injunction for delivery or destruction of the infringing goods.
  5. A court order to provide an account of profits made from the sale of the infringing goods.
  6. Damages.

Other enforcement proceedings

i Customs enforcement

Law No. 61(I)/2018 is the relevant law in relation to the control of the importation of goods infringing intellectual property rights.

The trademark proprietor can file a written application to the Customs Department requesting the suspension of the importation and attachment of goods in cases where a suspicion exists that the proprietor's intellectual property rights are being violated.

If the application is accepted, the Customs Department suspends the importation of goods in cases where it suspects that they violate the proprietor's intellectual property rights, following prior consultation with the applicant, and informs the importer about the suspension.

Section 8 of Law No. 61(I)/2018 states that in cases where the importer of the goods does not consent to the destruction of the infringing goods, the applicant has to file a court action within 10 working days from the date that the Customs Department has communicated the suspension of the delivery or attachment of the goods.

According to Section 12 of Law No. 61(I)/2018, any person involved in the importation of goods that violate intellectual property rights is subject to imprisonment for up to three years or a fine of €30,000, or both for a first-time offence; and to imprisonment for up to five years or a fine of €50,000, or both, for any subsequent offence. In the case that the convicted person was not aware of the infringing nature of the imported or exported goods, he or she is subject to a fine of up to €15,000.

ii Domain names

According to Section 13 of the Electronic Communications and Postal Services Law of 2004,12 the University of Cyprus, as administrator, may reject an application for registration of a domain name that is identical or very similar to a domain name that is already registered. Anyone who disagrees with a decision of the University regarding the non-registration of a domain name may first request the re-examination of the University's decision. If the applicant is not satisfied with the University's decision, he or she can apply for a hearing before the University. If the matter is not resolved by the University, the applicant may refer the matter to the Commissioner of Electronic Communications and Postal Regulation. The Commissioner's decision is final and binding on all parties, including the applicant, the University and any other third party affected. Any action or decision of the Commissioner is subject to an appeal to the Administrative Court.